Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 14 and 19 are is objected to because of the following informalities: In claim 14, line 1, “the first and second package” should be --the first and second packages--, as multiple packages are being referenced. In claim 19, line 2, “comprises” should be --comprise--, as plural “first and second packages” are being referenced. Appropriate correction is required.
Claim 16 is objected to under 37 CFR 1.75 as being an exact duplicate of claim 15. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-8 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DuVal et al. (8,662,301). DuVal et al. disclose an array of absorbent sanitary tissue products comprising a first sanitary tissue product in a first package (22) that conveys at least one of strength, absorption and softness (see claim 1, the indicium representing strength or absorbency provided therewith), and a second sanitary tissue product in a second package (32) that may be a sustainable package material such as cardboard or metal (see column 6, lines 53-61), and therefor conveys sustainability by its composition, and wherein the two sanitary tissue products may comprise non-wood and wood fiber content (see column 8, lines 25-64), the sanitary tissue products having differing characteristics (see column 5, line 49 through line 65) conveying these characteristics intuitively via non-verbal cues (see column 6, lines 46-52) including strength and softness (see column 5, lines 49-65), wherein properties including lint may be common intensive properties of both sanitary tissue products (see column 5, line 49 through column 6, line 61) wherein various intensive properties may be common and varied (see column 3, line 20 through column 4, line 7), wherein the first and second sanitary tissue product packages are separate from and adjacent each other (see column 2, line 64 through column 3, line 4), the first and second sanitary tissue product packages comprise a common single source identifier (see column 6, line 62 through column 7, line 3) and different sub-brand name portions (see column 7, line 50 through column 8, line 2), wherein the first package comprises cellulosic fibers (found in one of paper, cardboard and wood, see column 6, lines 53-61) and the second package does not comprise a film (one of paper, cardboard, plastic, wood or metal, see column 6, lines 53-61).
As to claim 2, the second package may be made of plastic that is fibrous, but not a film (see column 6, lines 53-61).
As to claim 3, the sustainable package material may be cardboard or any other sustainable conventional material (see column 6, lines 53-61). .
As to claim 5, a similar variety of the non-wood fibers are disclosed in column 8, lines 49-58.
As to claims 6-8, disclosed are sanitary tissue products of wood fibers and non-wood fibers, and sanitary tissue products of different types amongst the packages.
As to claim 11, disclosed are the first and second packages immediately adjacent on a shelf (see column 2, line 64 through column 3, line 4)..
As to claim 12, disclosed are the first and second packages immediately adjacent on a pallet (see column 2, line 64 through column 3, line 4).
Claims 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DuVal et al. (8,662,301). DuVal et al. disclose an array of absorbent sanitary tissue products comprising a first sanitary tissue product in a first package (22) that conveys at least one of strength, absorption and softness (see claim 1, the indicium representing strength or absorbency provided therewith), and a second sanitary tissue product in a second package (32) that may be a sustainable package material such as cardboard or metal (see column 6, lines 53-61), and therefor conveys sustainability by its composition, and wherein the two sanitary tissue products may comprise non-wood and wood fiber content (see column 8, lines 25-64), the sanitary tissue products having differing characteristics (see column 5, line 49 through line 65) conveying these characteristics intuitively via non-verbal cues (see column 6, lines 46-52) including strength and softness (see column 5, lines 49-65), wherein properties including lint may be common intensive properties of both sanitary tissue products (see column 5, line 49 through column 6, line 61) wherein various intensive properties may be common and varied (see column 3, line 20 through column 4, line 7), wherein the first and second sanitary tissue product packages are separate from and adjacent each other (see column 2, line 64 through column 3, line 4), the first and second sanitary tissue product packages comprise a common single source identifier (see column 6, line 62 through column 7, line 3) and different sub-brand name portions (see column 7, line 50 through column 8, line 2), wherein the first package and the second package can comprise cellulosic fibers (found in one of paper, cardboard and wood, see column 6, lines 53-61).
As to claim 14, the first and second packages can comprise the same material (see column 6, lines 53-61).
As to claims 15 and 16, the second package can comprise non-wood fibers(see column 6, lines 53-61).
As to claim 17, the combination of wood and non-wood fibers is disclosed (see column 8, lines 25-28). To provide a particular composition whereby the one product’s non-wood content is greater by weight than that of the other is not seen to be more than a particular possibility, not disclosed to be of any new or unexpected result derived therefrom.
As to claim 18, DuVal et al. disclose package materials that are inherently recyclable (one of paper, cardboard and wood, see column 6, lines 53-61).
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 5-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over DuVal et al. (8,662,301). DuVal et al. disclose an array of absorbent sanitary tissue products comprising a first sanitary tissue product in a first package (22) that conveys at least one of strength, absorption and softness (see claim 1, the indicium representing strength or absorbency provided therewith), and a second sanitary tissue product in a second package (32) that may be a sustainable package material such as cardboard or metal (see column 6, lines 53-61), and therefor conveys sustainability by its composition, and wherein the two sanitary tissue products may comprise non-wood and wood fiber content (see column 8, lines 25-64), the sanitary tissue products having differing characteristics (see column 5, line 49 through line 65) conveying these characteristics intuitively via non-verbal cues (see column 6, lines 46-52) including strength and softness (see column 5, lines 49-65), wherein properties including lint may be common intensive properties of both sanitary tissue products (see column 5, line 49 through column 6, line 61) wherein various intensive properties may be common and varied (see column 3, line 20 through column 4, line 7), wherein the first and second sanitary tissue product packages are separate from and adjacent each other (see column 2, line 64 through column 3, line 4), the first and second sanitary tissue product packages comprise a common single source identifier (see column 6, line 62 through column 7, line 3) and different sub-brand name portions (see column 7, line 50 through column 8, line 2), wherein the first package comprises cellulosic fibers (found in one of paper, cardboard and wood, see column 6, lines 53-61) and the second package does not comprise a film (one of paper, cardboard, plastic, wood or metal, see column 6, lines 53-61). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the array of sanitary tissue products of DuVal et al. with various combinations of properties amongst different packages in the general manner of DuVal et al. as claimed, as such a modification would predictably provide a variety of sanitary tissue products as in a store. The particular combination amongst the various possible combinations of variations of sanitary tissue products would fail to distinguish any new or unexpected result by their selection. A prima facie case of obviousness is established by presenting evidence indicating that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having those teachings before him to make the proposed combination or other modifications. See In re Lintner, 458 F.2d 1013,173 USPQ 560 (CCPA 1972).
As to claim 2, the second package may be made of plastic that is fibrous, but not a film (see column 6, lines 53-61).
As to claim 3, the sustainable package material may be cardboard or any other sustainable conventional material (see column 6, lines 53-61). .
As to claim 5, a similar variety of the non-wood fibers are disclosed in column 8, lines 49-58.
As to claims 6-8, disclosed are sanitary tissue products of wood fibers and non-wood fibers, and sanitary tissue products of different types amongst the packages.
As to claim 11, disclosed are the first and second packages immediately adjacent on a shelf (see column 2, line 64 through column 3, line 4)..
As to claim 12, disclosed are the first and second packages immediately adjacent on a pallet (see column 2, line 64 through column 3, line 4).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over DuVal et al. in view of Tippey (6,926,149). DuVal et al. disclose colored indicia on the outside surface, not on the unviewable inside surface (see column 4, lines 37-54), but do not disclose the sustainable package material as a paper-based material. However, Tippey discloses a package for sanitary tissue products that comprises sustainable package material (semi-rigid paper-based material, see column 3, lines 25-50). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the sustainable package material of DuVal et al. from sustainable semi-rigid paper in the manner of Tippey as claimed, as such a modification would predictably provide a stronger more durable package.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over DuVal et al. in view of Steeves-Kiss et al. (2006/0168914). DuVal et al. do not disclose abaca and bamboo as possible sanitary tissue products. However, Steeves-Kiss et al. recognize abaca and bamboo as previously known sanitary tissue product materials (see paragraph 0025). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the sanitary tissue product material of DuVal et al. from abaca and bamboo in the manner of Steeves-Kiss et al. as claimed, as such a modification would predictably provide two possible alternatives as suggested by DuVal et al..
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12, respectively of U.S. Patent No. 12,415,672. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter is wholly derivable from the previously patented claims and their indicated scope.
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Dependent claim 20 would also then be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, John (Gregory) Pickett, can be reached on (571) 272-4560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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